Out With the Old, In With the New

The beginning of a new year is often the impetus for change. For companies, this may mean a rebranding initiative involving an update to a company’s house mark or logo. In 2015 several companies, including Google, Facebook, and IHOP redesigned their well-known logos to appeal to modern consumers. (For a list of other companies that underwent re-branding in 2015, see: http://www.pastemagazine.com/articles/2015/12/the-10-biggest-rebrands-of-2015.html).

Although rebranding can provide a boost to a company’s image, it is not without potential for legal risk. One risk of updating a logo or a trademark is the potential loss of trademark rights in a prior recognized and beloved logo. Another risk arises from having to establish rights from scratch in a new logo – including ensuring that it does not infringe any prior marks.

Companies wishing to refresh their brand but still take advantage of the goodwill surrounding a prior mark, should consider modifications that update, but do not completely change, the commercial impression of the brand. Under this scenario, a brand owner may be able to rely on the doctrine of “tacking” in a later procurement or infringement matter, which allows a trademark user to “clothe a new mark with the priority position of an older mark.” Hana Financial, Inc. v. Hana Bank, 135 U.S. Ct. 907 (2015).

The doctrine sounds simple in theory; it requires only that the old and new marks be “legal equivalents.” Applying it, however, is more challenging because the determination of legal equivalency depends on whether the two marks “create the same, continuing commercial impression such that the consumer would consider them both the same mark.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).

While there are no hard-and-fast rules, the following chart, which summarizes some prior court and Trademark Trial and Appeal Board decisions determining legal equivalency of word marks, may provide some guidance to companies wishing to take advantage of the tacking doctrine.

Mark 1	Mark 2	Legal Equivalents?	Takeaway
THE HOLLYWOOD REPORTER	THE BOLLYWOOD REPORTER	(See In re Nielsen Bus. Media, Inc., 93 USPQ2d 1545 (TTAB 2010))	The difference of one letter may weigh against a finding of legal equivalency, particularly when it changes the meaning of the mark
	ESLON	(See Humble Oil & Refining Co. v Sekisui Chemical Co., 165 USPQ 596 (TTAB 1970))	A difference in spelling may not weigh against a finding of legal equivalency, if the marks are equivalent in sound, meaning and impression.
DOLPHIN		(See Humble Oil & Refining Co. v. Sekisui Chemical Co., 165 USPQ 596 (TTAB 1970))	The stylized version of a word mark may be a legal equivalent of the word mark.
THE ATL	THEATL	(See In re Cox Enterprises Inc., 82 USPQ2d 1040 (TTAB 2007))	A difference in spacing may not weigh against a finding of legal equivalency, if the marks are equivalent in sound, meaning and commercial impression.

For those brand owners who are considering a brand refresh in 2016, following are four recommendations to help ensure a seamless transition:

1. Conduct pre-launch market research to ensure that the new mark is well-received by its consumers (and avoid the 2010 GAP rebranding fiasco (https://www.bbc.com/news/magazine-11517129)!).
2. Conduct surveys or other marketplace research to determine whether consumers will appreciate the new mark as a mere extension of the old mark.
3. Plan an education/public relations campaign that will educate consumers on how the old mark fluidly transitions to the new, to reinforce the continuity of the brand.
4. Consider strategy for amending current trademark registrations, or for filing new applications claiming the first use dates of the prior marks, to preserve priority dates for enforcement purposes.

With this in mind, happy brand-new year!

This article appeared in the January 2016 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.